The Delhi High Court has referred a trademark infringement dispute between Newgen IT Technologies Ltd. and Newgen Software Technologies Ltd. to arbitration, holding that a mere change in the corporate name of a company does not extinguish an arbitration agreement. The court further held that the questions relating to arbitrability should ordinarily be decided by the arbitral tribunal in the first instance.
A Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla allowed an appeal challenging the Commercial Court’s refusal to refer the parties to arbitration under Section 8 of the Arbitration and Conciliation Act, 1996.
The case arose from a commercial suit filed by Newgen Software Technologies Ltd., alleging infringement and passing off after VCare Infotech Solutions & Services Pvt. Ltd. changed its corporate name to Newgen IT Technologies Ltd. The respondent contended that the appellant’s adoption of the word “Newgen” infringed its registered trademarks. Invoking the arbitration clause contained in the parties’ Partner Agreement dated January 10, 2023, the appellant sought reference of the dispute to arbitration. However, the Commercial Court rejected the application, holding that the arbitration clause did not survive the termination of the agreement and that disputes relating to trademark infringement were not arbitrable.
Setting aside the Commercial Court’s order, the High Court held that the change of a company’s name does not affect its legal identity or contractual obligations. It observed that accepting the respondent’s contention would mean that parties could escape contractual liabilities merely by changing their corporate names, which is impermissible in law. The Court further reiterated the settled principle that an arbitration agreement is independent of the underlying contract and ordinarily survives its termination.
The Bench also rejected the argument that the Court itself ought to conclusively determine the arbitrability of the dispute at the Section 8 stage. Referring to the doctrine of kompetenz-kompetenz embodied in Section 16 of the Arbitration Act, the Court held that while both the Court and the arbitral tribunal possess the jurisdiction to examine arbitrability, the tribunal should ordinarily be given the first opportunity to do so. The Court observed:
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“Clearly, the aspect of jurisdiction is one on which the Court, as well as the Arbitral Tribunal, are empowered to pronounce. In other words, whether the disputes between the parties are arbitrable or non-arbitrable is an aspect which, jurisprudentially, can be addressed both by the Court as well as by the Arbitral Tribunal. It has, therefore, to be decided whether, despite the Arbitral Tribunal having statutorily been conferred the power to adjudicate on its jurisdiction to adjudicate on the dispute before it, the Court, when moved under Section 8, should pronounce on the issue, without allowing the Arbitral Tribunal to do so in the first instance.”
Answering the question in favour of arbitral autonomy, the Court held that the Commercial Court ought not to have undertaken a final determination on arbitrability at the referral stage. Instead, the arbitral tribunal should first decide all jurisdictional objections, including whether the trademark claims are arbitrable.
Accordingly, the High Court allowed the appeal, set aside the Commercial Court’s order dated April 23, 2025, and referred the parties to arbitration.
